Ex Parte Kappes et al

Patent Trial and Appeal Board

Nov 15, 2018

14804419 (P.T.A.B. Nov. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/804,419 07/21/2015
69316 7590 11/19/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Daniel Kappes
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
337736.02 8013
EXAMINER
WANG, LIANG CHE A
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
11/19/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL KAPPES, JIAN LIN, IGOR LIOKUMOVICH,
HEMANT NANIV ADEKAR, and MANDAR GOKHALE
Appeal2018-002241
Application 14/804,419
Technology Center 2400
Before BRADLEY W. BAUMEISTER, JOSEPH P. LENTIVECH, and
SHARON PENICK, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1-20, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Microsoft Technology
Licensing, LLC. App. Br. 1.
Appeal2018-002241
Application 14/804,419
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to "a cloud-based storage
service that hosts content that may be shared within a peer-to-peer network."
Spec. ,r 17. The Specification provides:
The content that is shared within a peer-to-peer network may be
accessed from a cloud-based storage service. The cloud-based
storage service provides a peer-to-peer network with the
additional capability of sharing content from a web-based storage
facility. A version of the content is stored in the cloud-based
storage service as a set of hashes, referred to as content
information. The content information is a compacted version of
the content that may be downloaded from the cloud-based
storage service faster than downloading the original content.
Id. Claim 1, which is illustrative, reads as follows:
1. A system, comprising:
at least one processor and a memory;
the at least one processor configured to:
obtain content information associated with a content
file, the content file including a plurality of portions of
content, the content information comprising one or more
hash values that represent a compacted form of one or
more portions of the plurality of portions of content;
search for the content information in a peer-to-peer
network;
obtain one or more portions of the plurality of
portions of the content that match the content information
from the peer-to-peer network;
obtain at least one remaining portion of the one or
more portions of the plurality of portions of the content
from a first remote storage device; and
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Application 14/804,419
merge the one or more portions of the plurality of
portions of the content obtained from the content
information found in the peer-to-peer network with the at
least one remaining portion to construct a merged content
file.
Rejections
Claims 1-20 stand rejected on the grounds of non-statutory
obviousness-based double patenting based on claims 1-20 of Kappes et al.
(US 9,143,568 B2; issued Sept. 22, 2015) ("Kappes"). Final Act. 4--5.
Claims 1-20 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Schlacht et al. (US 2008/025 6615 A 1;
published Oct. 16, 2008) ("Schlacht") and Kallstrom et al. (US
2014/0156866 Al; published June 5, 2014) ("Kallstrom"). Final Act. 5-7.
DOUBLE PATENTING REJECTION
Appellants do not present any arguments regarding the Examiner's
rejection of claims 1-20 on the grounds of non-statutory obviousness-based
double patenting based on claims 1-20 of Kappes. Accordingly, we
summarily affirm this rejection.
REJECTION UNDER 35 U.S.C. § I03(a)
Examiner's Findings and Appellants' Contentions
Appellants contend the combination of Schlacht and Kallstrom is
improper. App. Br. 8-10; Reply Br. 6.
In finding claim 1 obvious in view of the teachings of Schlacht and
Kallstrom, the Examiner reasons:
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Application 14/804,419
It would have been obvious to a person with ordinary skill
in the art at the time the invention was made to incorporate the
"content searching with hash" feature of Kallstrom into Schlacht
because Schlacht disclose[ s] a system to obtain portions of files
at a computer network system and Kallstrom provide[s] a way
[to] search for the portions of file by using hash.
A person of ordinary skill in the art would have been
motivated to make the modification to Schlacht to provide an
efficient way to locate content on the network.
Final Act. 6-7; see also Ans. 8.
Appellants contend the combination of Schlacht and Kallstrom is
improper because "[t]here is no motivation to combine the references in the
manner suggested by the Examiner." App. Br. 8 ( emphasis omitted).
Appellants argue instead of increasing efficiency in locating content, the
proposed combination would result in "an increase in the processing needed
to retrieve the content" by "requir[ing] the additional processing of
distributing the hash values in addition to the non-crucial portions [ of the
content]." App. Br. 9. Appellants further argue the Examiner "fails to
provide a satisfactory explanation for the motivation finding that includes an
express and rational connection with the evidence presented" and "[ s ]uch a
conclusory statement with no explanation is inadequate to support a finding
of a motivation to combine the references." Reply Br. 6.
Analysis
Appellants' arguments are persuasive. Schlacht teaches that the non-
crucial portions of content are distributed by peer-to-peer distribution.
Schlacht ,r 116. The Examiner fails to explain how modifying Schlacht's
peer-to-peer distribution method to include Kallstrom's method of using
hash values to identify stored content (Kallstrom ,r 22) provides an efficient
way to locate content within Schlacht's peer-to-peer network. The
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Application 14/804,419
Examiner, therefore, fails to provide the required articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). As such, we are constrained
by the record to not sustain the Examiner's rejection under 35 U.S.C. §
103(a) of claim 1 and claims 2-20.
Because we find this issue to be dispositive as to the rejection under
35 U.S.C. § 103(a) of all the pending claims, we do not reach Appellants'
additional contentions of error.
DECISION
We affirm the Examiner's rejection of claims 1-20 on the grounds of
non-statutory obviousness-based double patenting based on claims 1-20 of
Kappes.
We reverse the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 103(a).
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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